Discussion:
What is the name of your state? N.J.
Hello
My question is I own by Trademark the name Higher Elements since 2002 as a Hip Hop performance group. I have been recording and performing, at private parties, nothing mainstream since 1991, and have studio invoices to prove this, under name The Higher Elements. Since 1991 I've sent many Demos to Lables in CA. Now in 2002 I realized that someone started a website in CA using my name and selling Urban T-shirts with the name Higher Elements on them. I realized this when I tryed starting my own website to promote the Group as well as Production services. I went to an attorney in 1993 about getting management and this website problem, let's just say at 300 dollars an hour all I had was one hour to pick his brain. Ron Pearlmen, the attorneys name then told me for protection of my name I should trademark it. So, I did and have been copyrighting songs since 1992 through USTPO. We are curently practicing for a up comming tour we plan on booking for the summer. I want to know if there is anything I can do to stop then from making money off my name and can I stop them from using the web address as well? I don't want to unless I have to start a higherlementsband.com website because I feel there will be confusion among our fans that I've been building since 1992, and they may not know any better and buy there merchandise thinking it is ours. Please if you can tell me what steps to take if any about this situation. Thank you for you're time.
God Bless
Michael
Answer:
A couple of things here:
1. Is your trademark a "standard character mark," or is it a mark with design elements? What classifications is your mark registered for?
2. Was the clothing company selling clothes using the name "Higher Elements" prior to your registration of the mark?
There are two issues I see here. First, if your mark doesn't cover clothing, and your mark is not a standard character mark, then you would need to do a "likelihood of confusion" examination to determine whether or not the other party is infringing your trademark. Second, if they were using the mark prior to your registration, then it's possible that they may have rights to the mark themselves, and even though you have a registration, that may not be sufficient to compel them to stop using their mark. Or the website name, since they may have acquired trademark rights to the name themselves.
A registered trademark does not mean you "own" the name "Higher Elements" -- it means that only you can use the name with respect to the classification that it is registered under, and any "confusingly similar" cases. It does not mean that you can keep people from using the mark if they had used the mark prior to your registration, and it does not mean that you can keep others from using the name "Higher Elements" in ways unrelated to your registration classification.
Your best bet is to sit down with a local attorney and try and get this all sorted out. You can try and post more facts and try and get more help here, but in the end, it will really take someone who has the ability to sit down and go over all of the relevant facts to determine what actual rights you may have.